The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2006. On October 6, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 10, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 11, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 3, 2006.

The Center appointed Tony Willoughby as the sole panelist in this matter on November 10, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

This is a re-filed Complaint, the earlier complaint by the Complainant against
the Respondent in respect of the Domain Name having been filed with the Center
on April 28, 2006. The decision in that case Saint Francis Hospital and Medical
Center v. Registrant (187640), WIPO Case No. D2006-0543,
in favour of the Respondent, was issued on June 19, 2006.

The issue as to whether or not this Complaint should
be entertained is discussed in section 6 below.

4. Factual Background

The Complainant is a non-stock corporation incorporated in the State of Connecticut, USA.

The Complainant claims to have used the name St Francis
Care for over 10 years in providing services to the Greater Hartford and Connecticut
community. The Respondent has not disputed this claim and the panel in Saint
Francis Hospital and Medical Center v. Registrant (187640), WIPO
Case No. D2006-0543, accepted this claim as fact. The Panel, too, accepts
it as fact.

As indicated above, on April 28, 2006, the Complainant launched a substantially identical complaint against the Respondent in respect of the Domain Name. In a decision dated June 19, 2006, the panel in that case found that the Respondent had no rights or legitimate interests in respect of the Domain Name and that the Respondent had registered and was using the Domain Name in bad faith within the meaning of paragraph 4(a)(ii) and (iii) of the Policy, but dismissed the complaint on the basis that the Complainant had failed to demonstrate that it had relevant rights in the name ST FRANCIS CARE within the meaning of paragraph 4(a)(i) of the Policy.

On July 13, 2006, the Complainant applied for registration of a service mark in accordance with the laws of Connecticut. The mark is described as follows:

“St Francis Care” with an artistic cross to the left of the mark. The cross is teal, PMS#3155, surrounded by a circle in teal. The lettering is set in Berkeley Font, with “Care” lettering in italics”.

On July 24, 2006, the Secretary of State for Connecticut certified that the application had been duly examined and that mark had been found registrable in accordance with the laws of Connecticut. The mark is now registered for medical and health care services. The certificate records that the mark was first used by the Complainant on July 31, 1997.

The Domain Name is connected, not to an active trading
site, but to a webpage featuring various apparently random links to sites having
nothing whatever to do with the Complainant.

5. Parties’ Contentions

A. Complainant

In all respects bar one the Complaint is substantially identical to the complaint filed in the earlier case and the Panel gratefully adopts the earlier panelist’s précis.

The Complainant asserts as follows:

The disputed domain name <stfranciscare.com> registered by the Respondent is confusingly similar to the trademark or service mark in which the Complainant has rights. It is contended that the Respondent’s use of <stfranciscare.com> is confusingly similar to <saintfranciscare.com> and <stfranciscare.org>, domain names registered and used by the Complainant. The domain name in question is confusingly similar to the name used by Saint Francis Hospital and Medical Center for its various facilities and services. Saint Francis Hospital and Medical Center has used this name for over ten years in providing services to the greater Hartford and Connecticut community and is used on various publications, on letterhead, in signs and in media advertising.

The Respondent has no rights or legitimate interests in respect of the domain name. The Complainant alleges that neither the “www.stfranciscare.com” site, nor the linked sites, represent any bona fide offering of goods or services. The categories found on the “www.stfranciscare.com” site link the user to other sites that have no relationship to any entity named Saint (or St.) Francis, but rather are sites that generally deal with employment, college degrees, or generalized physician information. The Respondent is not commonly known by any name that includes St. Francis and there is no evidence that the Respondent ever used the name St. Francis in any way, except as the domain name in question.

The Respondent is not making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain. It is noted further that the Respondent is making no legitimate non-commercial or fair use of the domain name and is diverting consumers who may be seeking information from Saint Francis Hospital and Medical Center in Hartford away from the Complainant’s websites and is tarnishing its name by the use of the disputed domain name. Since Saint Francis Hospital and Medical Center has registered <saintfranciscare.com> and <stfranciscare.org>, it is considered likely that internet users will attempt to seek information from Saint Francis Hospital and Medical Center by using the domain name <stfranciscare.com>. If they do so, they will be brought to a website that provides no information about Saint Francis Hospital and Medical Center. Users will not be able to link to the Saint Francis Hospital and Medical Center website.

The Respondent registered the Domain Name and is using it in bad faith. It is contended that the Respondent registered the Domain Name in order to prevent Saint Francis Hospital and Medical Center from using that domain name. The Respondent has engaged in similar conduct with other domain names and the Center has dealt with such activity by the Respondent.

It is further asserted that the Respondent has registered the name to attract Internet users away from the Saint Francis Hospital and Medical Center sites. Internet users who may have used the Saint Francis Hospital and Medical Center registered sites at “www.saintfranciscare.com” or “www.stfranciscare.org” may inadvertently reach the site with the domain name registered to the Respondent. Its similarity is designed to divert users away from the Saint Francis Hospital and Medical Center sites. The Respondent’s use of the domain name in question creates confusion that benefits the Respondent, despite the fact that it has no legitimate interest in the name, has never used the name, and does not appear to intend to use the name to offer products for services.

The only addition to which the Panel needs to refer in this case is the Complainant’s subsequent Connecticut service mark for ST FRANCIS CARE, registration no. 22672 dated July 24, 2006 in class 42 for medical and health care services.

B. Respondent

As was the case with the earlier complaint, the Respondent
did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. General

According to paragraph 4(a) of the Policy, the Complainant must prove that

(i) The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered in bad faith and is being used in bad faith.

However, before addressing those issues the Panel first has to decide whether or not to entertain this Complaint, it being a re-filed complaint, the previous complaint having been filed by the same complainant against the same respondent in respect of the same domain name.

As indicated above, the earlier complaint failed because, although the panel in that case found that the Respondent had no rights or legitimate interests in respect of the Domain Name and that the Respondent had registered and was using the Domain Name in bad faith within the meaning of paragraph 4(a)(ii) and (iii) of the Policy, the Complainant had failed to satisfy him that it had relevant rights in the name ST FRANCIS CARE within the meaning of paragraph 4(a)(i) of the Policy.

Under what circumstance should a re-filed case be accepted by a panel?

Consensus view: A re-filed case involves the complainant submitting a second complaint involving the same domain name(s) and the same respondent(s) as in an earlier complaint that had been denied. A re-filed case may only be accepted in limited circumstances. These circumstances include when the complainant establishes in the complaint that relevant new actions have occurred since the original decision, or that a breach of natural justice or of due process has occurred, or that there was other serious misconduct by the panel or the parties in the original case (such as perjured evidence). A re-filed complaint will also be accepted if it includes newly presented evidence that was unavailable to the complainant during the original case.

In this case the Complainant claims that its new service mark registration is a new fact or piece of evidence, which was not available to the Complainant at the time of the earlier complaint, and that this Complaint should therefore be entertained as a fresh complaint.

This characterisation of the Complaint has its problems. If the right on which the Complaint is based did not exist at the time the Domain Name was registered, the Complainant ought to have significant difficulty establishing bad faith registration and use of the Domain Name within the meaning of paragraph 4(a)(iii) of the Policy. That is not so in this case because the panel in the earlier case found that although the Complainant had failed to demonstrate that it had relevant rights, it did demonstrate that the Respondent had no rights or legitimate interests and that the Domain name had been registered and was being used in bad faith.

This somewhat bizarre situation is explained by the fact that, as has been accepted by the Panel and was accepted by the earlier panel, the Complainant has been providing medical and health care services to the Greater Hartford and Connecticut community under the name “St Francis Care” for 10 years. The name is an unusual name. It is inconceivable that the Respondent could have arrived at the Domain Name without having had the Complainant in mind.

The earlier panel could have concluded that on the balance of probabilities the Complainant must have had relevant rights. Instead, and for perfectly understandable reasons, the panel drew attention to the lack of any registered rights in the name of the Complainant and the total lack of any evidence before the panel to support a claim of unregistered rights (other than the existence of the Complainant over the previous 10 years).

Accordingly, what in essence the Complainant has done in re-filing the complaint has been to rectify a technical defect in the original complaint. Plainly, the earlier panel thought it very likely that the Complainant had unregistered rights, but dismissed the complaint because there was insufficient evidence before the panel to prove those rights.

If all that the Complainant had done was to produce to the Panel evidence in support of the existence of unregistered rights, prior to examining the cases dealing with re-filed complaints (see below), the Panel might have been disinclined to entertain the Complaint on the basis that the such evidence was not ‘new’ evidence, as it would have been available to the Complainant first time round. However, the registered right is ‘new’ and was not available to the Complainant first time around, although the Panel suspects that the Complainant could readily have obtained it earlier, if it had been minded to apply for it earlier.

Conscious of the need to preserve a consistency of approach in these cases, the Panel has reviewed previous WIPO UDRP decisions dealing with re-filed complaints. The majority of them are not of direct assistance in that they relate to cases where the ‘new’ evidence concerns the conduct of the Respondent.

The Panel was only able to discover 3 decisions dealing with cases where the earlier complaint failed simply because the complainant was unable to prove that it had relevant trademark or service mark rights for the purposes of paragraph 4(a)(i) of the Policy.

The first of these decisions is Backstreet Boys Productions, Inc. v. John
Zuccarini et al., WIPO Case No. D2000-1619.
This was not a re-filed case, but the panel, a three member panel of distinction,
in dismissing the complaint for lack of evidence of rights was concerned that
the complainant should be permitted to re-file having corrected the defects
in the complaint. The decision addressed the issue of dismissing complaints
without prejudice to the matter being re-filed and concluded in the following
terms:

“Finally, the learned Panelist [the panelist in an earlier unrelated decision, which they were considering] disapproved of the practice of dismissing a complaint without prejudice, stating that "such a practice is not desirable, and should be avoided wherever possible." While the Panel agrees that such dismissals should be used sparingly, the Panel believes that "dismissals without prejudice" serve an important purpose in certain cases, and that the present case is one of those cases. A failure of proof, especially one of a technical nature, frequently arises in court litigation. Because the parties are present, such evidentiary deficiencies can often be cured by oral testimony given when the failure arises, by explanation of the seeming inconsistency, or by the production or creation of documents which serve to establish the technical evidentiary point at issue. However, proceedings under the UDRP do not provide for oral hearings, except in exceptional circumstances. Thus, the parties' ability to correct technical failures of proof are severely limited. The Panel believes that in such instances a "dismissal without prejudice" is the procedure to be followed in order to insure that substantial justice is done between the parties.

7. Decision

For all of the foregoing reasons, the Panel dismisses this case for failure of the Complainant to establish that it has rights to the trademark on which it relies. This dismissal is without prejudice to the matter being refiled should Complainant be able to present evidence of a right to the trademark on which it relies.”

The second case is Omnipod, Inc v Ahmed Nassef,WIPO Case No. D2002-0084. This
case, too, is not a re-filed complaint, but it is a case where the complainant
failed to satisfy the panel that it had relevant rights; moreover, it is fairly
clear from the decision that if the complainant had produced sufficient evidence
to support the existence of relevant rights, the complaint would have succeeded.
The decision concluded:

“Is it open to the Complainant to bring a fresh Complaint under the Policy in order to deal with the deficiencies in this Complaint? […] Here the Complaint is so lacking in substance that it would not be practical for the Panelist to request further statements or documents pursuant to Rules, paragraph 12. That provision is not intended to permit a Panelist to advise a party how to write its Complaint or Response, as the case may be. Although as stated above, this is a case where the equities appear to be firmly in the Complainant's favour, it is for the Complainant properly and fully to plead its Complaint. However, the Panel must make it clear that should the Complainant decide to file a further Complaint, it will be for a future Panelist, if and when appointed, to decide on the admissibility of that Complaint.”

The panelist in that case certainly seems to have had an open mind on the topic.

The third case is P.T. Bali Discovery Tours v.
Mark Austin/Worldwide Internet Hotel Reservations, Ltd., WIPO
Case No. D2004-0299. This was a re-filed complaint. The complainant had
a trademark registration at the time of the original complaint but could not
produce the certificate because the Indonesian Trademark Office had not issued
it. Its complaint failed and the matter was re-filed when the certificate came
through. The three member panel dealt with the issue as follows:

“The evidence of a trademark registration certainly has a decisive influence on the result of proceedings under the Policy. In the present case, therefore, the issue is whether the Complainant has shown that such evidence could not have been obtained with reasonable diligence at the time the Complaint was filed in the previous case. The Complainant now filed an affidavit stating that at that time he was unable to produce a registration certificate because the process of Indonesian law does not allow a certificate to be issued until a period of three months has passed after the announcement by the Director of Trademarks of its intention to register a trademark, which announcement was made on October 16, 2003. He asserts that his trademark attorneys received such trademark certificate on March 10, 2004. The trademark registration filed in the present case by the Complainant indeed indicates October 16, 2003, as the date of registration. The Respondent’s contention that the Complainant needed only have made a phone call to the trademark office to ascertain whether the trademark had been approved / registered at that time or not is without merit, because the Complainant needed a copy of the registration certificate (and not just an answer over the phone) to prove its trade mark rights. Moreover, the Respondent did not deny the statement in the Complainant’s affidavit that the process of Indonesian law does not allow a certificate to be issued until a period of three months has passed after the announcement by the Director of Trademarks of its intention to register a trademark.

The Panel finds that the Complainant has thus made a case that the trademark at issue was already registered when the first proceedings started, but that due to the process of Indonesian trademark law he could not yet show a copy of the registration certificate at that time. Therefore, under the specific circumstances of the present case, the Panel finds that the Complainant shall be allowed to re-file the Complaint with regard to the <balidiscovery.org> domain name.”

This last case can be distinguished from the present case because in that case the complainant’s failure to produce the certificate was outside its control. In this case the Complainant could readily have filed evidence to establish unregistered rights, but failed to do so.

Of the other two cases, the panel in the first would plainly have allowed this re-filed case to go forward; whereas the panel in the second, while sympathetic, might not have done so.

The Panel has decided to follow the guidance of the panel in the first of the above cases. In coming to that conclusion the Panel has taken into consideration the following matters:

1. the distinction of the panel in that case;

2. the decision first time around could readily have gone in favour of the Complainant. The Complainant clearly had unregistered rights, but had merely failed to establish them properly with evidence;

3. the Respondent has not been inconvenienced in any way, not having responded in either case;

4. both the panel first time around and the Panel are in no doubt that the Domain Name is an abusive registration, the Respondent having no right or legitimate interest in respect of it;

5. the service mark registration is new, even though in substance it adds little to what was already there; and

6. transfer of the Domain Name to the Complainant is manifestly the just result.

Accordingly, the Panel decides that this re-filed complaint should be entertained.

B. Identical or Confusingly Similar

The Domain Name comprises the name “St Francis Care” which is the prominent textual element of the Complainant’s registered ST FRANCIS CARE service mark plus the generic domain suffix “.com”.

The Panel finds that the Domain Name is confusingly similar to a service mark in which the Complainant has rights.

C. Rights or Legitimate Interests

The Respondent does not appear to conduct a genuine offering of goods or services under or by reference to the Domain Name, is self-evidently not named “St Francis Care” and also does not appear to be making any fair use of the Domain Name.

On that basis the Complainant has with justification asserted that the Respondent has no rights or legitimate interests in respect of the Domain Name, and the Respondent has not responded to those allegations. In light of the circumstances, the Panel has no hesitation in finding that the Respondent has no rights or legitimate interests in respect of the Domain Name.

D registered and used in Bad Faith

When a person registers someone else’s trading name and service mark (and a very distinctive name/mark at that) as a Domain Name in circumstances where the registrant has no rights or legitimate interests in respect of the Domain Name, an explanation is called for. Yet there is no explanation. The Respondent has not responded.

The Complainant asserts that the Respondent’s objective was to block the Complainant from registering the domain name incorporating its mark. The Complainant asserts also that the Complainant’s objective was to divert traffic away from the Complainant. The Panel agrees that the Respondent’s primary objective could have been either of those.

The Panel cannot think of any non-abusive use that the Respondent might have
had in mind and finds that the Domain Name was registered and is being used
in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <stfranciscare.com>, be transferred to the Complainant.